Appeal No. 2007-0311
Application No. 10/175,744
The court held that a specific utility is “a use which is not so vague as
to be meaningless.” Id. In other words, “in addition to providing a
‘substantial’ utility, an asserted use must show that that claimed invention can
be used to provide a well-defined and particular benefit to the public.” Id.
Appellants argue that “the law does not require that an invention
provide an immediate benefit to the public in order to satisfy the utility
requirement. Any reasonable use asserted by Applicants that can be viewed
as providing a public benefit should be accepted as sufficient with regard to
the requirement of ‘substantial’ utility.” (Br. 9.)
Appellants’ asserted definition of “substantial utility” conflicts with
the Federal Circuit’s definition. The Fisher court squarely held that a
substantial utility is one that provides a “significant and presently available
benefit to the public.” 421 F.3d at 1371, 76 USPQ2d at 1230 (emphasis
added). We therefore reject Appellants’ argument that no immediate benefit
must be shown to meet the requirements of § 101.
Appellants argue that the identification of SEQ ID NO:74 as a
PDI-related protein is sufficient to establish the utility of the claimed
antibodies because it has useful therapeutic applications:
In view of the known involvement of other members of the PDI
family as regulators of protein folding and cellular viability, the
identification of a new member of this family is clearly
beneficial to the public, since it allows the development of
novel therapies directed to the targeting and/or treatment of
diseases involving protein misfolding and cellular
viability/proliferation, such as various types of cancer.
. . . In addition, since PDI was known to be involved in the
regulation of protein folding and cellular viability/proliferation,
that activity would be expected to be useful for a variety of
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